Tessera Inc. v. Sony Electronics, Inc., et al., C.A. No. 10-0838-RMB-KMW (D. Del. Nov. 15, 2012).

[Doc. No. 180]

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF DELAWARE

TESSERA INC.,

Plaintiff,

v.

SONY ELECTRONICS, INC., etal.,

Defendants.

Civil No. 10-0838-RMB-KMW

ORDER

BEFORE THE COURT is Plaintiff Tessera Inc.'s ("Tessera")

motion to compel discovery (Doc. No. 180). The Court has reviewed

the submissions of the parties in accordance with Fed. R. Civ. P.

78.

Background

This is a patent infringement case involving semiconductor

packaging technology. Tessera is an American corporation in the

business of developing and patenting semiconductor packaging

products. Sony is a global electronics manufacturer, and provides

consumer electronics and related devices for sale throughout the

world. Renesas is a corporation specializing in the manufacture,

design, and sale of semiconductor products. Defendants Sony

Electronics, Inc. ("Sony") and Renesas Electronics Corp.

("Renesas") are Japanese corporations, with their principal places

1

Case 1:10-cv-00838-RMB-KW Document 196 Filed 11/15/12 of 14 PageID #: 5279

of business in Japan.

Tessera holds a number of patents related to semiconductor

packaging technology, and licenses its intellectual property to

many manufacturers and packaging companies in the semiconductor

industry. In the instant matter, Tessera alleges that defendants

have unlawfully used Tessera's technology by making and selling

products that infringe patents held by Tessera.

The patents-in-suit, U.S. Patent Nos. 6,054,337 (the "'337

patent") and 6,885,106 (the "'106 patent”), both feature claims

related to multi-chip semiconductor packages arranged in vertical

stacks. That is, both patents relate to semiconductor products

where multiple chips are stacked, one on top of another, typically

for the purpose of facilitating their use in electronic devices

where space is at a premium. The '106 patent relates to stacked

semiconductor packages less than 1.2 millimeters high featuring

moveable terminals, while the '337 patent relates to a method for

assembling stacked semiconductor packages featuring, inter alia, a

flexible substrate with conductive traces and flexible leads

connected to the outer ends of said conductive traces, as well as

conductive terminals connected to some of said traces.

Tessera filed its complaint against Defendants without

identifying allegedly infringing products with specificity. At the

initial scheduling conference, the Court set forth a discovery

schedule that directed Tessera to "provide to Defendants their

preliminary infringement contentions. The infringement contentions

2


shall include claim charts identifying patent claims and accused

product(s) where each element of each asserted claim is allegedly

found." (See August 3, 2011 Scheduling Order, Doc. No. 54).

Defendants allege that they understood said scheduling order to

require Tessera to identify with specificity the products it was

accusing in its preliminary infringement contentions (“PICs”).

Tessera went on to provide PICs that identified 12 Renesas and 15

Sony products. Shortly thereafter, Tessera served Defendants with

a number of discovery requests that cover accused products beyond

those identified in Tessera's PICs. Tessera's discovery requests

included a definition for accused products that Defendants allege

is overly broad, and requires Defendants to identify allegedly

infringing products in their own product lines. Defendants

subsequently objected to Tessera’s definition of accused products

(the "'Your Products' definition").

On August 6, 2012 the Court ordered that Tessera "revise the

'Your Products' definition so that same is sufficiently narrowed to

the alleged infringement on the patents-in-suit and relevant time

frame." (See August 6, 2012 Order at 15, Doc. No. 169). The Court

held that "Tessera's 'Your Products' definition . . . is overly

broad, as it includes the production of information beyond the

patents-in-suit and is not limited to the applicable time frame."

(Id. at 7). The Court also specifically held that "the Court did

not intend to limit discovery to products identified in Tessera's

PICs for the duration of the litigation," but rather "the PICs

3


serve as a mechanism to facilitate discovery during the initial

stages of the litigation." (Id. at 7-8).

On August 15, 2012, Tessera emailed counsel for Defendants

Renesas and Sony with a revised definition of "Your Products"

requesting that discovery be provided by August 30, 2012. (See

Tessera Motion to Compel, Exh. A, Doc. No. 180). Sony responded on

September 7, 2012, proposing an alternate revised "Your Products"

definition. (Tessera Motion to Compel, Exh. B, Doc. No. 180).

Renesas and Tessera came to an agreement about which documents

Renesas would produce to Tessera in response to discovery requests.

(See Tessera Motion to Compel, Exh. D, No. 180). Sony and Tessera,

however, have been unable to agree upon a definition of "Your

Products," and as a result, Sony has not yet responded to multiple

discovery requests from Tessera.

DISCUSSION

Tessera requests that the Court compel Sony to produce all

responsive documents pursuant to Tessera's Request for Productions

Nos. 4-7, 26, 41, 44, 46-51, 54-56, 65-70, 90-91, and 93-97;

substantive responses to Tessera's Interrogatory Nos. 1 and 2; and

an identification of any Sony witnesses who Sony may call in this

case pursuant to Fed. R. Civ. P. 26. (Tessera Motion to COmpel,

Doc. No. 180).

Prior to the Court's August 6, 2012 Order, Tessera defined

"Your Products" in Plaintiff's Requests for Production of Documents

and Interrogatories as:

4


All of [Defendants'] electronic components,packages, or assemblies (including package-on-package modules and assemblies) made, used,sold, or offered for sale in the UnitedStates, or imported into the United States,since October 1, 2004, that contain two ormore semiconductor chips arranged in avertical stack, as well as any products,reference designs, modules, or circuit boardsusing (or designed to be used with) any ofthese components, packages or assemblies).

(See Tessera Motion to Compel, Exhs. E-F, Doc. No. 180) (emphasis

added).

Following the Court's August 6, 2012 Order directing Tessera

to revise the "Your Products" definition, Tessera revised the

definition to:

[A]ll of [Defendants'] electronic components,packages, or assemblies (including package-on-package modules and assemblies) that[Defendants] know or have reason to believewere made, used, sold, or offered for sale inthe United States, or imported into the UnitedStates, since October 1, 2010, that containtwo or more microelectronic elements (e.g.,semiconductor chips) and a dielectric element('substrate') arranged in a vertical stack,wherein:

a. conductive elements on or within thesubstrate are electronically connected with atleast two of said microelectronic elements,and

b. wherein the component, package, orassembly has a thickness of less than 1.2mm,not including the height of any solder balls,solder ball pads, solder paste, solder lands,or other external joining structures.

[see '106 patent, claim 1]

-OR-

a. the substrate has conductive traces, with

5


wire bonds or lead bonds connected to theconductive traces, b. a first of said microelectronic elementshas a surface, which faces the substrate, withcontacts that connect to at least some of saidconductive traces,c. a second of said microelectronic elementshas a surface with contacts,d. the first microelectronic element isdisposed between the substrate and secondmicroelectronic element, ande. the first and second microelectronicelements and substrate are electricallyinterconnected with one another, in whole orin part through wire bonds or lead bonds.

[see '337 patent, claim 27].

When chips are arranged in a 'vertical stack,'at least one horizontal surface of each chipis located, in whole or in part, above atleast one horizontal surface of at least oneother chip in the vertical stack; the chipsneed not be in contact with, adjacent, orperfectly aligned with one another.

(Tessera Motion to Compel, Exh. A, Doc. No. 180].

Sony's proposed revised "Your Products" definition is:

"[A]ll electronic components or packagesmanufactures by [Defendants] that [Defendants]know were made, used, sold, or offered forsale in the United States, or imported intothe United States, since October 1, 2010, thatcontain two or more microelectronic elements(e.g., semiconductor chips) and a dielectricelement ('substrate') arranged in a verticalstack, wherein:

a. conductive elements on or within thesubstrate are electrically connected with atleast two of said microelectronic elements,and

b. wherein the component or package has athickness of less than 1.2mm above theterminals.


6


-OR-

The product is manufactured by [Defendants]according to the following steps:

a. providing a substrate with (1) flexibleleads connected to conductive traces and (2)terminals connected to at least some of theconductive traces;

b. providing a first microelectronic elementwith a face that includes contacts, andassembling that face to the substrate;

c. providing a second microelectronic elementand assembling it with the firstmicroelectronic element and the substrate, sothat the second microelectronic elementoverlies the first microelectronic element;and

d. electrically interconnecting themicroelectronic elements and the conductiveterminals by (1) connecting the flexible leadsto the contacts of the second microelectronicelement and (2) connecting at least some ofthe conductive traces to the contacts of thefirst microelectronic element.


(Tessera Motion to Compel, Exh. B, Doc. No. 180).

Finally, Tessera also offered an alternative to Sony to either

"(1) comply with the revised 'Your Products' definition, or (2)

enter into a compromise along the lines of what Renesas has agreed

to provide, i.e., Sony would agree to produce wirebond drawings,

substrate drawing and package outline drawings (including the

underlying native versions of those documents) for all products

that contain two or more microelectronic elements (e.g.

semiconductor chips) and a dielectric element arranged in a

vertical stack that Sony has sold, offered for sale, or imported

7


into the United States since October 1, 2010 (whether individually

or as a component of another product)." (Tessera Motion to Compel,

Exh. D, Doc. No. 180).

Tessera argues that Sony's proposed revised "Your Products"

definition is "entirely improper," in particular because it

introduces numerous disputed claim terms, which would permit Sony

to use its own interpretation of the claim terms. (Tessera Motion

to Compel, at 3, Doc. No. 180). Tessera also urges that Sony's

failure to provide documents without further delay will jeopardize

depositions of Sony witnesses scheduled to occur during the first

two weeks of December in Osaka, Japan. (Id. at 4).

Sony argues that Tessera's revised definition of "Your

Products," while it contains more words than did the original

definition, "still has essentially the same improperly broad

technical scope." (Sony Opp., at 1, Doc. No. 186). In particular,

Sony argues that Tessera's revised definition of "Your Products" is

overbroad since it (1) is not limited to products that Defendants

know are being sold in the United States since it covers any

products that Sony "know or have reason to believe were made, used,

sold or offered for sale in the U.S."; (2) ignores the asserted

claim of the '337 patent, as it is a method claim, and Tessera's

proposed definition would cover products regardless of whether or

not they were made using that particular method; and (3) the

definition is not limited to products made by Sony only, but

instead would include Sony products that use chips made by third

8


parties. (Id. at 3-4). Sony does not address why Tessera's offer

to compromise, which was accepted by Renesas, is not an acceptable

solution to the discovery dispute.

In response to Sony's opposition, Tessera argues that Sony's

proposed definition, with respect to the '337 patent, is unworkable

since Sony uses the patent claim language verbatim, the meaning of

which is vigorously disputed by the parties, in particular as it

relates to the ordering of the method steps. (Tessera Reply, at 4,

Doc. No. 189). Tessera claims that "[u]sing this disputed language

to define the scope of discovery would be nonsensical because Sony

would produce nothing." (Id.). Tessera further argues that

limiting the definition of "Your Products," and therefore

discovery, to products containing chips that are made by Sony and

products that Sony knows are being sold in the United States

improperly limits Tessera's claims. (Id.). Tessera argues that

its allegations are not limited to Sony's own products that Sony

knows are being sold in the United States, but instead encompasses

"the full scope of Sony's patent infringement, which under the

Patent Act extends to 'whoever makes, uses, offers to sell, or

sells any patented invention, within the United States,' as well as

to conduct which induces or contributes to such infringement by

another." (Id. (citing 35 U.S.C. § 271)).

Generally, "[p]arties may obtain discovery regarding any

nonprivileged matter that is relevant to any party's claim or

defense." Fed. R. Civ. P. 26(b). "Relevant information need not

9


be admissible at the trial if the discovery appears reasonably

calculated to lead to the discovery of admissible evidence." Id.

Tessera's claims are outlined in the Third Amended Complaint,

which was filed on March 6, 2012. (Doc. No. 117). Tessera's Third

Amended Complaint sets forth two claims for patent infringement:

one claim for infringement of the '106 patent and one claim for

infringement of the '337 patent. More specifically, Tessera

alleges that "Sony has infringed and is currently infringing the

'106 patent in violation of 35 U.S.C. § 271 by, among other things,

making, using, selling, offering to sell, and/or importing products

falling within the scope of the '106 patent." (Third Amend. Comp.

¶ 15, Doc. No. 68). Tessera also alleges that "Sony has infringed

and is current [sic] infringing the '337 patent in violation of 35

U.S.C. § 271 by, among other things, making, using, selling,

offering to sell, and/or importing infringing devices." (Id. at ¶

23).

First, the Court will address Sony's arguments that Tessera's

discovery should be limited to (1) Sony products that contain Sony

chips only, and (2) Sony products that Sony knows are being made,

used, sold, offered for sale in or imported into the United States.

Since Tessera's claims include allegations that Sony has infringed

and is infringing on the '106 patent and the '337 by both making

and using, selling, offering to sell, and/or importing infringing

devices, Tessera's claims purport to include not only chips

manufactured by Sony and products using Sony chips, but also

10


potentially Sony products including chips manufactured by other

third party companies that allegedly infringe on Tessera's patents.

Since Tessera is permitted, under the Federal Rules of Civil

Procedure, to seek and obtain discovery on information relevant to

its claims, the Court finds that Tessera may seek discovery

regarding not only Sony products containing Sony chips, but also

Sony products containing third party chips that allegedly infringe

on Tessera's patents. Similarly, Tessera's allegations regarding

Sony's infringement of the '106 and '337 patents are not limited to

products that Sony knows are being sold into the United States.

(See Third Amend. Comp. ¶¶15, 23, Doc. No. 68). Therefore, Tessera

is likewise permitted to seek and obtain discovery regarding not

only Sony products that Sony knew were being made, used, sold,

offered for sale in or imported into the United States, but also

Sony products that Sony had reason to believe were being made,

used, sold, offered for sale in or imported into the United

States. 1

Next, the Court will address Sony's argument that Tessera's

"Your Products" definition does not track the '337 patent

infringement claim since that claim is a "method" claim. Sony

argues that Tessera's definition of "Your Products" as it relates

to the '337 patent infringement allegations would be overinclusive,

1. Sony argues that the Court "already rejected this impossiblyvague language during the July 17, 2012 hearing on Tessera's lastmotion to compel." (Sony Opp. at 4, Doc. No. 186). However, theCourt did not rule on this issue at the hearing on July 17, 2012or in the Court's following August 6, 2012 Order (Doc No. 169).

11


and therefore overbroad, as it could include products that could

meet Tessera's definition but that were not made in accordance with

the method covered by the '337 patent. (Sony Opp., at 4, Doc. No.

186). However, Sony has failed to provide an example of such a

product or a specific argument as to the number of products that

could fall into such a category. The Court finds that Tessera's

definition of "Your Products," as it relates to the '337 patent

infringement allegations, is reasonably calculated to lead to the

discovery of admissible evidence regarding Tessera's claims. The

Court further finds that Sony's argument that Tessera's definition

is overinclusive, and therefore overbroad, fails to provide

specific examples of the definition's overbreadth. Therefore,

Tessera's definition of "Your Products" seeks information within

the permissible scope of discovery with respect to Tessera's '337

patent infringement claims.

Accordingly, for the reasons set forth above and for good

cause shown:

IT IS on this 15th day of November 2012,

ORDERED that Sony produce documents and information responsive

to Tessera's discovery requests within seven (7) days of the date

of this Order based upon the following definition of defined term

"Your Products":

"Your Products" means all of Your electroniccomponents, packages, or assemblies (includingpackage-on-package modules and assemblies)that you know or have reason to believe weremade, used, sold, or offered for sale in theUnited States, or imported into the United

12


States, since October 1, 2010, that containtwo or more microelectronic elements (e.g.,semiconductor chips) and a dielectric element('substrate') arranged in a vertical stack,wherein:

a. conductive elements on or within thesubstrate are electronically connected with atleast two of said microelectronic elements,and

b. wherein the component, package, orassembly has a thickness of less than 1.2mm,not including the height of any solder balls,solder ball pads, solder paste, solder lands,or other external joining structures.


-OR-

a. the substrate has conductive traces, withwire bonds or lead bonds connected to theconductive traces, b. a first of said microelectronic elementshas a surface, which faces the substrate, withcontacts that connect to at least some of saidconductive traces,c. a second of said microelectronic elementshas a surface with contacts,d. the first microelectronic element isdisposed between the substrate and secondmicroelectronic element, ande. the first and second microelectronicelements and substrate are electricallyinterconnected with one another, in whole orin part through wire bonds or lead bonds.


When chips are arranged in a 'vertical stack,'at least one horizontal surface of each chipis located, in whole or in part, above atleast one horizontal surface of at least oneother chip in the vertical stack; the chipsneed not be in contact with, adjacent, orperfectly aligned with one another.

and it is further;

13


ORDERED that Sony identify pursuant to Rule 26 any individuals

likely to have discoverable information, along with the subjects of

that information, that Sony may use to support its claims and

defenses, within seven (7) days of this Order.

s/ Karen M. Williams KAREN M. WILLIAMSUNITED STATES MAGISTRATE JUDGE

cc: Hon. Renée Marie Bumb

14


Tessera Inc. v. Sony Electronics, Inc., et al., C.A. No. 10-0838-RMB-KMW (D. Del. Nov. 15, 2012).

Documents

Transcript of Tessera Inc. v. Sony Electronics, Inc., et al., C.A. No. 10-0838-RMB-KMW (D. Del. Nov. 15, 2012).